SCT addresses Non-Traditional Marks, Trademark Opposition Procedures and Industrial Designs
December 5, 2008
WIPO’s Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) concluded on December 5, 2008 after endorsing agreement on areas of convergence on “non-traditional marks” - such as holograms and audio marks - trademark opposition procedures, consideration of key issues relating to industrial designs, and new areas of work.
Addressing delegates, WIPO Director General Francis Gurry remarked on the dynamism and constructive spirit of the SCT, noting that it is, “a very productive committee in the normative area.” He welcomed progress in work on non-traditional marks and trademark opposition procedures, noting “it is very encouraging to see that despite the wide variety of models and practices that exist in relation to opposition procedures, you have identified some areas of convergence and been able to reach a decision on these.”
Mr. Gurry urged the SCT to focus renewed attention on the issue of designs which, for historical reasons, has not been at the forefront of intellectual property policy-making considerations. He underlined the importance of industrial designs as a means of distinguishing or differentiating products which offer essentially identical functional features. He noted that, for products which bring a new technology to the market, design is a key means of communicating how the technology will work.
Below is a summary of the SCT's work this week.
At its last session in July, the SCT had identified a number of areas of convergence concerning requirements for the representation and description of “non-traditional marks” such as three-dimensional marks, color marks, sound marks, movement marks, hologram marks or position marks. This week’s meeting reaffirmed agreement on these questions. In seeking to identify areas of convergence, the aim is to promote more consistent outcomes in the trademark registration process across different jurisdictions for the benefit of trademark owners and trademark offices.
The SCT also reaffirmed its agreement on areas of convergence relating to trademark opposition procedures. These procedures offer third parties the opportunity to object to the registration of a trademark either before or after it has been registered with a trademark office. The procedures in questions relate to grounds for opposition, entitlement to file an opposition, a frame for the length of the opposition period, the availability of observations made by third parties and a “cooling off” period allowing for settlement negotiations. The SCT agreed that opposition procedures are a desirable feature of trademark registration procedures.
With regard to future work on trademarks, the SCT decided to address the issues of absolute grounds for refusal of all types of marks, and technical aspects relating to the registration of certification and collective marks at its next session. The SCT also decided to initiate work on questions relating to letters of consent used in various jurisdictions to overcome relative grounds for refusal. This typically concerns a situation in which an examiner raises an objection to the registration of a mark based on an already existing registration, and the applicant shows - with a letter of consent from the holder of the registration on which the refusal is based - that this holder would consent to the registration of the later mark.
The SCT examined a range of topics relating to industrial design law and practice in its review of a comprehensive survey based on responses from over 70 member states. A summary and analysis of the survey results is here. The SCT agreed to continue work on these questions at its next session with a view to identifying possible areas of convergence in design law and practice.
The meeting, from December 1 to 5, 2008, was attended by 72 member states, 4 intergovernmental organizations and 8 non-governmental organizations. The next meeting of the SCT is scheduled to take place in Geneva in June 2009.
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